WorldPay Limited v. Neely Jones
Claim Number: FA0803001169388
Complainant is WorldPay Limited (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <worldpaysales.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 25, 2008.
On March 26, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <worldpaysales.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 21, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@worldpaysales.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <worldpaysales.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <worldpaysales.com> domain name.
3. Respondent registered and used the <worldpaysales.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WorldPay Limited, is a wholly-owned subsidiary of The Royal Bank of Scotland Group and is a leading Internet payment service provider with over 20,000 customers worldwide. Complainant currently holds numerous trademark registrations for its “WORLDPAY” mark, including registration with the United State Patent and Trademark Office (“USTPO”) (Reg. No. 2,245,537 issued May 18, 1999).
Respondent, Neely Jones, registered the <worldpaysales.com>
domain name September 15, 2007 and
is currently using the disputed domain name to resolve to a web page featuring
one link, which connects Internet users to Complainant’s website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant alleges rights to its WORLDPAY mark based on its USPTO trademark registration. Under the Policy, registration of a mark with the pertinent government authority, such as the USPTO, confers rights in that mark on a complainant. Complainant has thus established rights to the WORLDPAY mark for purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy).
Complainant also alleges that the <worldpaysales.com> domain name is confusingly similar to its registered WORLDPAY mark. The disputed domain name contains Complainant’s mark in its entirety and adds the term “sales” and the generic top-level domain name (“gTLD”) “.com.” The Panel finds the addition of the generic term “sales” does not negate the confusingly similar character between Complainant’s WORLDPAY mark and the disputed domain name. The Panel also finds the addition of a gTLD is irrelevant in distinguishing the disputed domain name from Complainant’s mark because all domain names require a top-level domain. Therefore, the Panel concludes that Respondent’s <worldpaysales.com> domain name is confusingly similar to Complainant’s WORLDPAY mark pursuant to Policy ¶ 4(a)(i). See Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <worldpaysales.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based on the allegations in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). Since Respondent has not responded to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests. However, the Panel will examine the record to determine if such rights or legitimate interests are present pursuant to Policy ¶ 4(c). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
Complainant alleges Respondent is not commonly known by the <worldpaysales.com> domain name. The WHOIS information identifies Respondent as “Neely Jones” and no other information is provided suggesting Respondent might be commonly known by the disputed domain name. Pursuant to Policy ¶ 4(c)(ii), the Panel concludes Respondent lacks rights and legitimate interests in the <worldpaysales.com> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name).
Complainant alleges Respondent’s use of the <worldpaysales.com> domain name is not in connection with a legitimate noncommercial or fair use, and does not provide a bona fide offering of goods or services. Because Respondent is using the disputed domain name to direct Internet users to Complainant’s website, the Panel assumes Respondent is earning click-through fees for each redirected Internet user. Therefore, the Panel finds the registration and use of the <worldpaysales.com> domain name is not in connection of with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As previously stated, Respondent is currently using the <worldpaysales.com> domain name to resolve to a web page displaying a link to Complainant’s website. Respondent is creating a likelihood of confusion between Complainant’s WORLDPAY mark and the disputed domain name. The disputed domain name includes Complainant’s mark in its entirety, creating confusion as to the connection with Complainant in relation to the <worldpaysales.com> domain name and corresponding web page. The Panel concludes Respondent’s registration and use of the <worldpaysales.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <worldpaysales.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 8, 2008
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